LEGO Juris A/S v. Congjun Zhang

Case No. D2012-0614

1. The Parties

2. The Domain Name and Registrar

The disputed domain name <legoego.com> is registered with China Springboard, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2012. On March 23, 2012, the Center transmitted by email to China Springboard, Inc. a request for registrar verification in connection with the disputed domain name. On March 26, 2012, China Springboard, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 30, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On April 2, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2012.

The Center appointed Douglas Clark as the sole panelist in this matter on May 7, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The language of the Registration Agreement is Chinese. The Complainant requested that the language of the proceedings be English or alternatively the Complainant be allowed to file its Complaint in English and the Respondent be allowed to file in Chinese if it so requested. The reasons given for this request were:

(a) The Complainant had sent warning letters in English which the Respondent had not responded to. The Complainant suggested that the Respondent should have at least responded that they do not understand the letter; and

(b) the disputed domain name comprises the trademark LEGO and the English word “ego” so the disputed domain name could be seen to target an English speaking audience.

The Respondent did not respond the language request, which in accordance with the Center’s practice was sent in Chinese and English. In many UDRP cases, panels have determined that this is sufficient to allow the Complaint to be filed in a language other than that of the registration agreement.

There are particular circumstances of this case which caused the Panel to consider that it was appropriate to order a translation of at least the Factual and Legal Grounds of the case. These were:

(a) there was no suggestion the Respondent was familiar with the English language. The website which the disputed domain name resolves to is written entirely in Chinese and clearly designed to do business in China;

(b) some of the factual assertions made by the Complainant did not appear to be supported by the evidence;

(c) there was a material mistranslation into English of the Chinese name use by Respondent; and

(d) the Complaint was essentially based on an argument that the Complainant’s mark Lego is entitled to protection as a well-known mark under article 6 (bis) of the Paris Convention and articles 16.2 and 16.3 of the TRIPS Agreement. One legal assertion made by the Complainant was not supported by the provisions cited.

The Panel therefore ordered that the Factual and Legal Grounds of the Complaint be translated into Chinese and that the Respondent have 14 days from service of the translation to file a response (if any).

On June 19, 2012, the Complainant submitted the Chinese translation of the Complaint. The Respondent filed a Response on July 3, 2012 within the time limit. The Complainant filed a short response by email to the Respondent’s Response. This was filed only in English and did not add anything to what had been said in the Complaint. In the interests of fairness to the Respondent, the Panel specifically states that it did not take this supplemental submission from the Complainant into account.

Given the issues raised in this case, the Panel considers it appropriate to issue its decision in both English and Chinese. The definitive text of the Panel’s decision has been rendered here in English. A Chinese language version of the Panel’s decision has also been produced, and is included herewith for convenience as Appendix 1 (Chinese Translation). In the event of any inconsistencies between the English language and Chinese language texts of the Panel’s published decision, the decision in the English language shall be the definitive text.

4. Factual Background

The Complainant, based in Denmark, is the owner of the mark LEGO, and other trademarks used in connection with the Lego brands of construction toys and other Lego branded products. The Complainant and its licensees, through their predecessors, commenced use of the LEGO mark in the United States of America (“United States”) during 1953, to identify construction toys made and sold by them.

Over the years, the business of making and selling LEGO branded toys has grown remarkably. By way of example, the revenue for the Lego Group in 2009, was more than USD 2.8 billion. The Complainant has subsidiaries and branches throughout the world, and Lego products are sold in more than 130 countries, including in China. The Complainant opened a flagship shop in Beijing in 2007.

The Trademark Lego was first registered in China in 1994.

The Complainant is also the owner of more than 2,400 domain names containing the term”lego”.

The disputed domain name <legoego.com> was registered in June 17, 2011. The disputed domain name resolves to an online shop trading under the name “乐易购”. This is pronounced in Chinese (Mandarin) “Le-Yi-Gou”, and translated as “Happy Easy Shopping”. The online shop sells a variety of products including clothing and electronic products. The online shop appears to be a legitimate business. No evidence was filed suggesting otherwise. For the purposes of this decision, the Panel will proceed on the basis it is a legitimate business.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <legoego.com> is identical or confusingly similar to the Complainants trademark Lego, being made up of the trademark Lego and the English word “ego”.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name on the following grounds:

(a) The Respondent has no trademarks relating to the disputed domain name;

(b) The Respondent has not been using the disputed domain name in any way that would suggest it has any rights or legitimate interests;

(c) The Complainant has never licensed or authorized the Respondent to use a domain name incorporating the term “Lego”;

(d) The Respondent must have known of the Complainant’s rights in “LEGO” when registering the domain name;

(e) The Respondent is using the domain name to provide links to third party sites, such as “Zippo” “Homes” and “Thinkpad”;

(f) The Respondent is not a reseller of the Complainant’s goods;

(g) “[A]t the bottom of the website the following text is inserted ‘((C) 2005-2011 Beijing ICP prepared 10,021,997 Lok Tesco - a leading professional online shopping mall, Copyright and All rights reserved.)” (The reference to ‘Lok Tesco’ is to the Chinese characters ‘乐易购’. ‘Lok’ is the Cantonese pronunciation of ‘乐’ (Le). ‘易购’ (Yigou) is the name of a convenience store chain in China. ‘乐购’ (Legou) is, in fact, the translation of ‘Tesco’ in Chinese.)” The Complainant submitted that if the Respondent was relying on the use of “乐购”, to justify using “Lego” they should have used the pinyin “Legou”; and

(h) No evidence has been found that the Respondent used “Lego” as a company name or has any other legal rights in the name Lego.

The Complainant contends that the Respondent has registered and is using the disputed domain in bad faith on the following grounds:

(a) LEGO is a well-known trade mark;

(b) the Respondent has failed to respond to correspondence from the Complainant;

(c) the Respondent is not a reseller of the Complainant;

(d) the use of sponsored links on the website at the disputed domain name could be a factor indicating bad faith; and

(e) the Respondent must have registered and have been using the disputed domain name while being aware of the Complainant’s rights.

B. Respondent

The Respondent responded as follows:

(a) the disputed domain name and the Complainant’s trademark are not related. The Complainant cannot say that just because the disputed domain name includes “lego” it infringes the Complainant’s intellectual property rights. The Complainant’s Lego products are construction toys for children. The disputed domain name is for the online sale of products. Therefore, the Complainant is in the producing industry, while the Respondent is in the online sale channel field, which is not related to the Complainant.

(b) The Respondent has all the rights and legitimate interests in the disputed domain name. The domain name registration rules provides for a “first to register” policy. After registration of the disputed domain name, the Respondent has legally obtained the ICP license and promoted the website.

(c) The fact there are many brands on the Respondent’s website is normal, because it is a B2C online shop.

(d) The Respondent’s Chinese name is “乐易购 “。 “Legoego” is a transliteration not a specific Pinyin translation. For instance, “Google” in Chinese is “谷歌” (“Guge” in Pinyin), which is a transliteration not a Pinyin translation. There are many other examples of such transliteration.

(e) The disputed domain name is not being used in bad faith. Since legally registering the disputed domain name, the Respondent has used it legitimately. The fact there are links to other sites on the website is normal. It is designed to increase traffic to the site.

(f) The Complaint claims it has tried to contact the Respondent in various emails. The Respondent admits he/she has indeed received those emails, but because the Respondent did not understand, he/she did not respond.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is made up of “lego” and the word “ego”. The first part is identical to the Complainant’s trademark. The second part is similar to the Complainant’s trademark save for the removal of the letter “l”.

The first element of the UDRP is generally considered a standing issue. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overiew 2.0”, para 1.1). The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark LEGO.

B&C. Rights or Legitimate Interests/Registered and Used in Bad Faith

In this case, whether the Respondent has rights and legitimate interests and whether he has registered and used the disputed domain name in bad faith are tied together.

The Complainant does not have a trademark registration in China for “Lego” for online sales1. There is no evidence of any sales by the Respondent outside China. There are no sales of the Complainant’s core products namely toys and related products on the Respondent’s website. The Panel also notes from visiting the Respondent’s website that the links identified by the Complainant that are alleged to be sponsored links are in fact links to pages on the website selling the products in question. The Panel also accepts that in appropriate cases, a domain name registrant may choose a fanciful transliteration of Chinese characters and a registrant is not obliged strictly to follow Pinyin spelling.

On the other hand, the Respondent has not provided a completely satisfactory explanation for the choice of the domain name. To this panel, “Legoego” is not the most obvious choice for an online shop trading under the name “Le-Yi-Gou”. It does not seem to the Panel to be a transliteration as submitted by the Respondent. If the Respondent’s transliteration submission was correct, it seems to this Panel that, “乐易购” should be “le-e-go”, but not “le-go-e-go”. There is the addition of an additional syllable “go”. The Respondent stated it did not respond to correspondence from the Complainant because it did not understand the correspondence. This may be true, but the correspondence from the Centre was sent to the Respondent in Chinese and English.

The Panel accepts on the basis of the evidence filed that the Complainant’s trade mark LEGO is well known and entitled to protection under Article 6bis of the Paris Convention.

This Panel finds the question to be determined in the particular circumstances of this case therefore to be: what level of protection should be given to a well known mark when it is being used (as presently) as part of a domain name for unrelated goods or services?

The Panel finds this requires consideration of Article 6(bis) of the Paris Convention and Article 16(3) of the TRIPS Agreement. Denmark and China are both members of the Paris Convention and the WTO, so it is appropriate to refer to these international agreements.

Article 6bis(1) of the Paris Convention provides:

“The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.”

Article 16(3) of TRIPS provides:

“Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.”

Article 16(3) gives protection to a well-known mark when it is used in relation to goods or services that are not similar to those for which the mark is registered. This article sets two factors that need to be present to give cross-class protection to a well-known mark:

1. The use indicates a connection between the goods or services and the owner of the registered trademark (this effectively covers and expands the test of likelihood of confusion in Article 6(bis) of the Paris Convention); and

2. The interests of the owner of the registered trademark are likely to be damaged by such use.

The Complainant’s submissions in this regard were:

“According to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property, confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for LEGO goes far beyond toys and goods similar to toys.” [Emphasis in the original Complaint]

“Anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark LEGO there is a considerable risk that the trade public will perceive the Respondent’s Domain Name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. The trademark also risk being tarnished by being connected to a website. By using the trademark as a dominant part of the Domain Name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark. Persons seeing the Domain Name at issue, even without being aware of the content, are likely to think that the Domain Name is in some way connected to the Complainant, (‘initial interest confusion’).”

The Panel finds, however, that the Paris Convention and TRIPS do not give blanket protection to well-known marks as submitted by the Complainant. A connection between the mark and the goods or services must be formed and the interests of the owner must be likely to be damaged by the use.

The Complainant argues that the requisite connection and damage will be caused by “initial interest confusion”. “Initial interest confusion” is a doctrine that was developed in the United States of America and has now been accepted in some other jurisdictions, such as the United Kingdom of Great Britain and Northern Ireland. It has not been properly defined and raises numerous difficult questions as to its scope and application2.

This Panel does not consider that it is necessary in the circumstances of UDRP domain name disputes to make use of the “initial interest confusion” doctrine. Paragraph 4(b)(iv) of the UDRP, which sets out evidence of what can be used to show registration and use in bad faith, effectively covers the doctrine. This Panel finds no need to add another doctrine to domain name decision making to solve the merits as this particular case, as the existing provisions of the Policy provide adequate guidance. Paragraph 4(b)(iv) provides:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

An intentional attempt to attract users to a website by creating a likelihood of confusion as to source or affiliation is effectively what is meant by “initial interest confusion.” In the case of a well known mark, there is a greater likelihood of confusion as to source or affiliation. There will be many cases, when the requirements of Article 16(3) of the TRIPS Agreement are clearly made out, or can be clearly inferred, by the mere nature of the disputed domain name.

However, in the Panel’s view based on the available evidence, this is not the case with the disputed domain name <legoego.com>. The disputed domain name does not by its mere nature, to this panel, suggest the domain name is connected or affiliated in some way with the Complainant, even when taking into account that LEGO is a well known mark. “Ego” has no meaning in English that suggests a link with the Complainant. This Panel is not satisfied that an Internet user will necessarily look at the disputed domain name and consider there is an affiliation or connection with the Complainant, its products or services: It is certainly possible, but does not strike the Panel as more likely than not based on the evidence of filed in this case.

This is not the end of the matter however, as paragraph 4(b)(iv) of the Policy does allow a panel to consider the content of the website to determine if there is a likelihood of confusion as to the products or services being offered.

In this case, on the evidence before the Panel it appears the Respondent is running a legitimate business and not selling any products which compete with the Complainant or are likely to damage the Complainant’s brand; there is no use of the trademark LEGO by itself on the website; and there is no other evidence of any likely damage to the interests of the Complainant or to its trademark LEGO.

The Panel therefore finds that, on the evidence before it, it cannot conclude that the Respondent has been using the disputed domain name <legoego.com> in bad faith. Having reached its conclusion, the Panel does not need to decide if the Respondent registered the disputed domain name in bad faith or has rights and legitimate interests in the disputed domain name.

Accordingly, somewhat reluctantly, the Panel has determined to deny the Complaint.

This determination is made without prejudice to the Complainant filing a new complaint with additional evidence (or bringing a complaint in the national courts).